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The FIFA World Cup 2014 law, the trademarks and the ambush marketing

The World Cup 2014 Law was approved by Brazilian President Dilma Roussef and it was published in the Official Bulletin of June 06, 2012. As of that date, the World Cup 2014 established measures and protection related to major international events which will occur in Brazil in 2013 and 2014, specifically, the FIFA Confederations Cup 2013 and the FIFA World Cup 2014.
The law establishes several measures regarding intellectual property and it defines as “Official Symbols”, among others, the trademarks owned by FIFA, with direct effects not only in connection with marks used by FIFA during the competitions, but also, in connection with the so-called “ambush marketing”.

The law provides that the Brazilian Patent and Trademark Office (BPTO) will grant the “highly-renowned” status to FIFA’s registered trademarks (including trademarks related to FIFA Confederations Cup 2013 and FIFA World Cup 2014), and also to other official marks owned by the federation to be indicated by it. The main effect of the highly-renowned status is the protection of the marks in all fields of activities.

The World Cup 2014 Law also provides that FIFA’s trademarks that are not yet registered in Brazil will be declared as “well-known marks”. In other words, such marks will be protected in Brazil in their respective fields of activities, in spite of the fact that they are not yet registered in Brazil. FIFA will send to the BPTO a list bearing the marks to be declared as “well-known” marks.

Besides granting rights to FIFA’s “Official Symbols”, the law establishes, expressly, that the undue use of the “symbols” will also be considered as a crime, to be punished with imprisonment of 3 months to 1 year, or payment of a fine.

The World Cup 2014 Law also highlights aspects regarding “ambush marketing” – a subject very common nowadays – and it is divided into two different lines: by association of by intrusion. The penalty for both circumstances is the same to be applied for those who misuse FIFA’s “Official Symbols”, namely, imprisonment of 3 months to 1 year, or payment of a fine.

According to the law, incurs in crime of Ambush Marketing by association whoever uses marks (or the respective products and services) by associating them directly or indirectly with FIFA’s events or “symbols”, without authorization from FIFA, by leading the public to conclude that such marks, products or services are authorized by FIFA. The law’s goal here is to avoid undue association with FIFA’s marks.

As for Ambush Marketing by intrusion, the law provides that it is a crime to expose marks, business, establishments, products or services without FIFA’s authorization or by person authorized by FIFA at the locals of the events. The law’s goal here is to impede that third parties unauthorized by FIFA obtain benefits by diverting the public’s attention, mainly where the competition is taking place as well as at their surroundings.

By the way, the law assures FIFA and parties indicated by FIFA the exclusivity in using their respective marks in the so-called “Official Places of Competition”, their surroundings and main access routes. Among the official places, there are not only the stadiums, but also the teams’ training centers, the media and registration centers, parking areas and areas officially reserved to fans, even if these later areas are not placed in the cities where the matches will occur.

The exclusivity area has a maximum range of 2 kilometers around the “Official Places of Competition”. It is important to mention that the range will not affect or limit commercial establishments which were already working before the publication of the law.

Finally, the law lists several forms of prohibition of publicity of products and use of marks without FIFA’s authorization in the “Official Places of Competition” (from the offering of tasting of food and beverage, until air, nautical and vehicle publicity), which may object of civil measures. As a general rule, the law uses as a parameter the Brazilian Civil Code for indemnification purposes. If it is not possible to measure the damages or the amount of loss of profits (a regular subject when it comes to intellectual property), indemnification must be correspondent to the amount which the infringer would have paid to the owner of the infringed right for a license to exploit or use such right – this concept is similar to the concept adopted by the Brazilian Industrial Property Law.

Carmen Sánchez-Puelles